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We're Happy You Joined: Canada and Brazil Are the Most Recent Nations to Sign on to the Madrid Protocol

July 18, 2019

Canada and Brazil have signed on to the Madrid Protocol, which established "one-stop shopping" for filing an international trademark application. The Protocol came into effect in Canada on June 17, 2019 and will come into effect in Brazil on October 2, 2019, bringing the total of Protocol nations to 121.

The requirements are fairly straightforward: a company relies on a home country trademark registration or pending application when filing the Protocol application. If the Protocol application is filed within six months of the filing of the home nation application, then the Protocol application receives the earlier filing date. So, a home country application filed on October 3, 2019 must be filed via the Protocol - in Brazil and Canada, for instance - on or before April 3, 2020 to receive the October filing date. Priority is advantageous - if party A filed for the trademark KERFLUGGLE for scarves on October 3 and then timely filed its Madrid Protocol application, and party B filed for the same trademark for scarves in Brazil and Canada on December 3, party A will win.

After filing, each nation's trademark office will separately examine each application, so it's quite possible to file in Brazil, Canada, China and the European Union and receive refusals in one or more of those nations. Oppositions by third parties are filed nation-by-nation as well. It's important to know that the Madrid Protocol's "one-stop shopping" system means that changes in the home registration are automatically imparted to all of the foreign registrations. So, if goods are removed by a company from a U.S. registration because the trademark isn't being used on those goods, the removed goods will also be cancelled in each of the foreign registrations. Accordingly, there are some situations in which the Protocol may not be favored - if it's important to have many goods listed in a Chinese application, for example, a national application may be the better option.

For the first five years of the International Registration (IR), if the home country registration is cancelled or withdrawn, then the registrant has the option to file for national protection in the nations that were originally selected and registered. But those national applications must be filed within three months of the lapsing of the home country registration. Once five years have passed, the IR is no longer dependent on the home country registration.

Another benefit of the Madrid Protocol system is that assignments are filed once through the World Intellectual Property Office rather than nation-by-nation and renewal (every 10 years) isn't on a per-nation basis - only one fee is paid. With each nation that joins the Madrid Protocol system, the process of filing applications around the world becomes more efficient. Now that Brazil and Canada have joined, who will be next?

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Goldsmith, Amy B. Partner and Co-Chair of Intellectual Property Group Partner and Co-Chair of Intellectual Property Group 212.216.1135 VCard

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